Start-ups use “shaming” to fight trademark infringement claims

Phil Michaelson found himself embroiled in a modern-day David and Goliath story last year when his web cookbook, KeepRecipes.com, came under fire for trademark infringement, as reported by the Wall Street Journal. The complaint centered on his website’s use of a “keep” button that allowed users to save recipes. A New York-based site called AdKeeper, which allows users to “keep” ads by clicking a button, thought that Michaelson’s website constituted trademark infringement, and sent him a cease-and-desist letter.

Unable to afford a costly legal battle, but unwilling to alter his website, Michaelson posted the letter on Chillingeffects.org. The web site, a joint project of the Electronic Frontier Foundation and seven university law schools, aims to protect online activity from overreaching intellectual property claims. A group of lawyers eventually offered to represent Michaelson at no cost after seeing his letter, but no claim was ever filed.

Michaelson’s case illustrates a new strategy being used by start-ups who find themselves the subject of trademark disputes. Known as "shaming” by some lawyers, the tactic gives leverage to small companies who are financially outmatched by their competitors.

Despite Michaelson’s success, some experts warn that the strategy can backfire if it draws attention to a legitimate infringement claim. Others are skeptical that social media movements will deter most big companies from seeking to protect their trademarks.

For its part, Chillingeffects also has expanded into the social media realm. In an unusual move, Twitter posted more than 4,400 Digital Millennium Copyright Act (DMCA) takedown notifications dating back to Nov. 2010 to the site. The decision to release the notices came almost simultaneously with Twitter’s announcement that it would be censoring Tweets on a country-by-country basis.